Claim Number: FA0805001191874
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <annarboroptometry.com>, <annarboroptometry.net>, and <annarboroptometry.org>, registered with Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 19, 2008.
On May 23, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <annarboroptometry.com>, <annarboroptometry.net>, and <annarboroptometry.org> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
3, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 23, 2008
by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org, email@example.com, firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 27,2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <annarboroptometry.com>, <annarboroptometry.net>, and <annarboroptometry.org> domain names are identical to Complainant’s ANN ARBOR OPTOMETRY mark.
2. Respondent does not have any rights or legitimate interests in the <annarboroptometry.com>, <annarboroptometry.net>, and <annarboroptometry.org> domain names.
3. Respondent registered and used the <annarboroptometry.com>, <annarboroptometry.net>, and <annarboroptometry.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ann Arbor
Optometry, PLLC, incorporated on May 2, 2007 with the state of
Respondent, Weve Gotu, registered the <annarboroptometry.com>, <annarboroptometry.net>, and <annarboroptometry.org> domain names on May 9, 2007, which resolve to a website that appears to be the “Bennett Optometry” homepage, displaying “Bennett Optometry” company information and services, which are in direct competition with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has not presented evidence of a trademark registration with any governmental authority for its ANN ARBOR OPTOMETRY mark. However, trademark registration is not dispositive provided Complainant can establish common law rights in its mark. In SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000), the panel found that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. The Panel in Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000), found common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established.
However, in this case, the Panel finds that Complainant has not met this burden. By failing to provide any evidence, which might suggest that a relevant group of consumers identified the Complainant as the source for the services provided under the ANN ARBOR OPTOMETRY mark, Complainant has failed to establish the secondary meaning requisite for establishing common law rights in the mark. Therefore the Panel finds that Complainant has not met its burden of proof for establishing common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products) ]”).
The Panel finds that Policy ¶ 4(a)(i) has not been satisfied.
As the Panel finds Policy ¶ 4(a)(i) has not been satisfied, it is unnecessary to examine Policy ¶¶ 4(a)(ii) and (iii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having failing to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 11, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum